Cosmetic Warriors Ltd & Anor v amazon.co.uk Ltd & Anor [2014] EWHC 181 (Ch) (10 February 2014)

Cosmetic Warriors Ltd & Anor v amazon.co.uk Ltd & Anor [2014] EWHC 181 (Ch) (10 February 2014)

Amazon's use of the 'Lush' trade mark in Google AdWords sponsored ads that display the mark, and on its own website in drop-down menus and related searches, constitutes trade mark infringement because such use is in the course of trade, without consent, in relation to identical goods, and is liable to affect the origin, advertising, and investment functions of the Lush trade mark. The average consumer would not ascertain without difficulty that the goods offered are not Lush's, and Amazon's conduct amounts to a commercial communication using the mark. Both Amazon entities are liable as joint tortfeasors. The E-Commerce Directive defences do not apply to the conduct found infringing.

Citation
[2014] EWHC 181 (Ch)
Parties
Claimant: Cosmetic Warriors Limited; Claimant: Lush Limited; Defendant: Amazon.co.uk Limited; Defendant: Amazon EU SARL
Jurisdiction
England and Wales
Judgment Date
10 February 2014
Procedural Posture
Trade Mark Infringement Claim / High Court Judgment
Outcome
Claimants succeed in part; trade mark infringement found in respect of certain uses.
Legal Topics
Trade Mark Infringement, Keyword Advertising, Internet Search Results, Joint Tortfeasance, Functions of a Trade Mark, E Commerce Directive Liability
Intellectual Property Trade Marks E Commerce Trade Mark Infringement Keyword Advertising Internet Search Results Joint Tortfeasance Functions of a Trade Mark +1 more

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Parties

Cosmetic Warriors Limited

Claimant

Lush Limited

Claimant

Amazon.co.uk Limited

Defendant

Amazon EU SARL

Defendant

Procedural Posture

Trade Mark Infringement Claim / High Court Judgment

Legal Issues

  1. 1 Whether Amazon's use of the 'Lush' trade mark in Google AdWords and on its own website constitutes trade mark infringement under Article 5(1)(a) of the Directive/Article 9(1)(a) of the Regulation.
  2. 2 Whether Amazon's conduct damages the origin, advertising, or investment functions of the Lush trade mark.
  3. 3 Whether Amazon is liable as a joint tortfeasor.

Ratio Decidendi

Amazon's use of the 'Lush' trade mark in Google AdWords sponsored ads that display the mark, and on its own website in drop-down menus and related searches, constitutes trade mark infringement because such use is in the course of trade, without consent, in relation to identical goods, and is liable to affect the origin, advertising, and investment functions of the Lush trade mark. The average consumer would not ascertain without difficulty that the goods offered are not Lush's, and Amazon's conduct amounts to a commercial communication using the mark. Both Amazon entities are liable as joint tortfeasors. The E-Commerce Directive defences do not apply to the conduct found infringing.

Court Disposition

Claimants succeed in part; trade mark infringement found in respect of certain uses.

Orders

  • Declaration of trade mark infringement against both Defendants for specified uses.
  • Injunction to restrain further infringing acts.